In a trademark opposition disputing over abbreviation for ‘Las Vegas’, the Japan Patent Office (JPO) decided the term “VEGAS” shall be distinctive in connection with a service of providing amusement facilities (casino facilities, Pachinko parlors) of class 41.
[Opposition case no. 2018-900349, Gazette issue date: August 30, 2019]
Opposed mark is a word mark “VEGAS” in a plain gothic type.
The mark was filed in December 26, 2017 by a Japanese entertainment company, VEGASVEGAS Co., Ltd., headquartered in Tokyo, for various services in class 41 including providing casino (gambling) facilities, Pachinko parlors.
JPO, going through substantive examination, admitted registration (TM Registration no. 6080858) and published for opposition on October 9, 2018.
TRADEMARK OPPOSITION – Article 3(1)(iii)
On November 26, 2018, before the lapse of a two-months opposition period, DAIHACHI Co., Ltd. (d/b/a VEGAS GROUP), an amusement company, operating Pachinko & slot machine parlors in the name of VEGAS, filed an opposition, arguing that the word ‘VEGAS’ has been known among relevant consumers for an abbreviation for Las Vegas, the gamblers’ paradise, a trendy tourist destination, the entertainment capital of the world.
If so, it shall be forbidden to allow exclusive use of famous geographical indication by trademark right. Besides, consumers at the sight of opposed mark would establish a link between the geographical indication Las Vegas and “amusement facilities, casino (gambling) facilities and Pachinko parlors” and just conceive the facilities using opposed mark are connected with or equivalent to services available in Las Vegas Nevada (US).
Therefore, it is evident that opposed mark lacks distinctiveness in connection with the designated service of providing amusement facilities (casino facilities, Pachinko parlors) of class 41 and shall be revocable under Article 3(1)(iii) of the Trademark Law.
Article 3(1) of the Trademark Law is a provision to prohibit descriptive marks from registering.
Section (iii) of the article aims to remove any mark merely or directly suggesting quality of goods and services.
“Article 3(1) Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark:
(iii) consists solely of a mark indicating, in a common manner, in the case of goods, the place of origin, place of sale, quality, raw materials, efficacy, intended purpose, quantity, shape (including shape of packages), price, the method or time of production or use, or, in the case of services, the location of provision, quality, articles to be used in such provision, efficacy, intended purpose, quantity, modes, price or method or time of provision;”
JPO Opposition Board totally dismissed the opposition by stating that:
- From the produced evidences, it is unclear whether ‘VEGAS’ becomes ordinary indication for Las Vegas in Nevada, US.
- The Board could not find circumstances and business practices related to the service in dispute that ‘VEGAS’ has been used to indicate a specific quality of the service or an association with Las Vegas at all.
- A mere fact that ‘VEGAS’ reminds consumers of Las Vegas is insufficient to negate distinctiveness of opposed mark in connection with the service in dispute.
Based on the foregoing, the JPO decided opposed mark shall play a part of source indicator over the service in class 41 and irrevocable under Article 3(1)(iii) of the Trademark Law.
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM